Registrability Of The Two-Letter Wordmark

Introduction

Letters and numbers are included in the definition of “mark.” However, they are infamously lacking in intrinsic individuality due to the ubiquitous and natural practice of corporations and individuals using their initials on items, letters, paper, and so on, or as symbols indicative of quality or other traits. Instead of showing two or more letters as letters in and of themselves, the letters might be entwined or interwoven into a single device, formed into a monogram, which is prima facie registrable as a device. In the case of letter combinations, however, they are typically not deemed intrinsically unique unless it can be demonstrated that they have gained distinctiveness as a result of long usage of such marks. This blog will delve into the complexities involved in the registration of a two-letter word mark in India.

Registrability of letters or numerals as wordmark

Loose representations of letters or digits as marks are treated differently in terms of registrability. Marks consisting of only alphabets or letters are not deemed distinguishable unless the cumulative effect of the characters is a pronounceable word, such as SEA, FAR, and so on. This is because a merchant can use his initials or declare the grade or classification number on or in connection to his goods/services in the packing invoice or other stationery. As a result, registration of marks consisting of letters or numbers is not permissible in the absence of proof of distinguishability. However, establishing acquired distinctiveness may be problematic if the mark, on its own, is incapable of being identified with a particular source notwithstanding widespread use. For example, letters such as “ABC” or “XL” for guidebooks or directories would be unregisterable.

Additionally, letter marks have an aspect of pronouncability. Because the mark may be regarded as a short wordmark, a mark composed of characters that may be uttered, such as ‘OX,’ will increase the odds of registrability.

The following tips may be useful when selecting letter marks for usage in India.

To begin, the more random and unconventional the letters, the more probable the mark will have the required distinctive character. Second, well-known trading practises must be evaluated. The more a letter mark matches signs typically used in the relevant trade, the less unique it is. Third, if two or three letters create a non-descriptive pronounceable word, it may be admissible, unless it is objected to on the basis of being identical/similar to any previous mark, or having identical/similar products as any other prior mark. Finally, if the applicant applies for a design mark or at least stylizes the letters in the mark, the applicant’s prospects of overcoming objections of lack of intrinsic uniqueness improve.

In general, the uniqueness of letter marks in India is towards the weaker end of the strength spectrum. As a result, in order to obtain approval from the Indian Trademark Registry, a solid foundation of uniqueness of the mark, whether inherent or acquired, must be established in the first phase.

Two-letter wordmarks

Marks made up of two letters will also be disallowed if they are descriptive abbreviations, acronyms, or the like. When two letters combine to make a non-descriptive word, the mark test is not whether the letters can be spoken but whether they will be accepted. In this case, the whether the letters are likely to be taken as a word by the public (see the decision of Robin Jacobs acting as the Secretary of State’s Tribunal in relation to Application No.1409562 ) Marks consisting of two random letters will usually be regarded as devoid of any distinctive character for goods because of the tendency, in trade, to use letters as model or catalog references (and because of the limited number of combinations of two letters). However, letters are not commonly used as model and catalog references for all goods. They are not widely utilized as model and catalogue references for all objects. Two random letters can thus have a distinct character for commodities such as groceries and drinks, which are not often categorized in this manner. For services, two letter marks may also be appropriate.

If the applicant or his agent can demonstrate that the above-mentioned general usage of letters in commerce does not apply to the specific items stated in the application, there may be grounds for approving two letter marks for other commodities.”

In the Diamond T Motor Co.’s Application, a diamond border device, the word diamond, and a single letter T inside the device were given registration without exclusive right to each independent component. The logo as a whole was thought to be distinguishable, but the individual pieces were not.

Judicial Standing:

P.P. Jewellers Pvt. Ltd. v. P.P. Buildwell Pvt. Ltd FAO(OS) No. 535/2009

Facts: ‘PP Jewellers Pvt. Ltd.’ filed a suit for infringement of trademark against the defendants, ‘PP Buildwell Pvt. Ltd.’, regarding the use of the mark ‘PP’ by the defendants. PP Buildwell Ltd., allegedly, had acquired a trademark over the letters ‘PP’ by way of continuous and extensive use of the same in their trade practices. It was claimed by PP Jewellers Pvt. Ltd. that PP Buildwell’s use of the said mark was an infringement on their formidable reputation and goodwill in the said mark and further, that PP Buildwell are guilty of passing off.

Contentions of the parties: PP Jewellers Ltd claimed that by using the letter mark ‘PP’ as part of their company identities, PP Buildwell Pvt Ltd misrepresented their services as those of PP Jewellers Ltd. While deciding the issue of passing off, the Court considered several cases, including Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 and Harrods Ltd. v. Harrodian School Ltd, [1996] R.P.C. 697, and concluded that the simple fact that PP Buildwell Pvt. Ltd. added a suffix to the letters ‘PP’ meant that they had no mala fide intention to defraud or confuse consumers. The addition of ‘Buildwell’, ‘Mall’, or ‘Shopping Mall’ was sufficient to separate the PP Buildwell Pvt Ltd marks from the PP Jewellers Ltd marks. They also indicated that they had joined the construction sector and that there was a genuine potential of a consumer mistaking one firm for the other.

Held: The Court adjudged that PP Jewellers Ltd. used the mark ‘PP’ as a mere prefix for their commercial products. The actual mark used by the plaintiffs was a combination of the letters PP and the name of the business viz. PP Jewellers or PPJ. Hence, the Court opined that ‘the letters ‘PP’ when not supplanted by the business name would not acquire a connotation entitling such a mark protection from infringement.’ In other words, the letter mark ‘PP’ was not subject to trademark protection under Sec. 29 of the Trademarks Act, 1999. The Court relied upon this fact to hold that the term ‘PP’ per se would not constitute an ‘essential feature’ of the mark and as such merely the use of the term, ‘PP’ by ‘PP Buildwell Pvt. Ltd.’ would not institute an infringement.

Furthermore, the Court determined that the consumer profiles of the two parties are distinct. PP Buildwell, as a builder, caters to consumers from the upper classes, who are supposed to be educated and knowledgeable enough to identify the defendant’s firm from the plaintiff’s. Furthermore, the degree of care that a consumer is required to exert while looking for business establishments is considerable, and as a result, passing off is quite rare. In this perspective, the Court decided, inter alia, that the letters ‘PP’ themselves were not unique, and so relief based on the letter mark alone could not be given.

G.D. Pharmaceuticals (P) Ltd. v. Registrar of Trade Marks, (1979) 83. Cal WN 302

Facts: The issue involves the registration of a trademark called ‘jidi’ in class 5 for a pharmaceutical treatment. The registrar denied the application under Section 18(4) of the Trade and Merchandise Act of 1958. The deputy registrar believed that the term jidi was phonetically comparable to the letters G.D. and, as such, was not registrable absent proof of uniqueness, which he believed did not exist. As a result, an appeal was lodged against the deputy registrar’s judgment.

Contentions of the parties: The appellant contended before the deputy registrar that no disclaimer was necessary, and that because the letters G and D were included in the said registered trademark 14609 in favour of the applicant, the applicant was entitled to the exclusive use of the said two letters. “The mere fact that the applicants’ marks contained the same prefix “jidi” cannot be deemed to be special circumstances enabling them to register that prefix per se, when that prefix is a phonetic equivalent of the letters G.D. and when the alleged use thereof prior to the date of the application for registration thereof is too meagre and short for the prefix to have acquired distinctiveness or became capable of distinguishing,” the deputy registered held.

Held: The appeal was granted, and the deputy registrar’s judgment was reversed. These marks, taken separately, would not have been evidence of distinctiveness of the word ‘Jidi’ as such, but taken in conjunction with the other factors are good evidence with any other circumstances requiring that the applicant’s application be accepted and proceed with other registration processes.

Concluding Remarks

Hence, it can be observed from the abovementioned analysis that the position is not clear in India with regard to the registrability of a two-letter wordmark. Although, the precedents shed some light on the criteria as “distinctiveness” for what could be registered as a two-letter wordmark, however, there are several other factors that are to be taken into consideration while determining the case for which implementation of specific provisions under the Trademark Law would be the appropriate option so as to avoid the ambiguity.

Author: Anuja Saraswat- a student of  NMIMS Kirit P. Mehta School of Law (Mumbai),  in case of any queries please write back us via email at support@ipandlegalfilings.com or contact us at IP And Legal Filings.